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1 Resolving Intellectual Property and Technology Disputes through Arbitration and Mediation Eun-Joo MIN Arbitration and Mediation Center World Intellectual.

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Presentation on theme: "1 Resolving Intellectual Property and Technology Disputes through Arbitration and Mediation Eun-Joo MIN Arbitration and Mediation Center World Intellectual."— Presentation transcript:

1 1 Resolving Intellectual Property and Technology Disputes through Arbitration and Mediation Eun-Joo MIN Arbitration and Mediation Center World Intellectual Property Organization (WIPO) Geneva, Switzerland Arbitration and Mediation Center

2 2 Trends in IP ADR (1) Internationalization of creation and use of IP rights & globalization of markets; need for cross-border solutions for disputes –Accommodate different languages, cultures, (geographically limited) laws –Avoid litigation in several jurisdiction –Avoid home-court advantage Growth of complex long-term relationships; strategic alliances; need to co-exist –Licensing, cross-licensing, patent pooling –Need for mechanisms that preserve relations Arbitration and Mediation Center

3 3 Trends in IP ADR (2) Increasingly technical and specialized nature of IP –need for specific expertise of neutral Growth of IP/technology contracts Closely guarded relationships: confidentiality Highly competitive areas; Short product and market cycles –Need for time-efficient procedures Increasing cost of multi-front litigation Dispute resolution as business decision Alternative to ADR? Routine IP litigation on a multi-country front Arbitration and Mediation Center

4 4 Arbitration and Mediation (1) Party control / autonomy / consensual Flexibility : à la carte Expertise –Party selection of neutrals; tailored appointment Neutral –Arbitrator/mediator, language, law, venue Confidential –Existence, disclosures, result (WIPO Arb Rules Arts. 52, 73-76) Less adversarial than court litigation –Restore a working business relationship Arbitration and Mediation Center

5 5 Arbitration and Mediation (2) Single Procedure –Multi-jurisdictional disputes in one proceeding –No jurisdictional problems –Time & cost effective (WIPO Arb Rules, Art 38) Arbitration: finality / enforceability of awards –New York Convention vwith limited exceptions (e.g. denial of due process), automatic enforcement of arbitral awards v137 signatories –inter-partes effect Mediation: commercial solutions Arbitration and Mediation Center

6 6 WIPO Arbitration and Mediation Center Time & cost efficient resolution of IP and technology disputes, between private parties, away from court Established in 1994 as part of international bureau of WIPO Procedures –Mediation –(Expedited) Arbitration –Mediation followed, in the absence of a settlement, by arbitration –Expert Determination –Domain Name Dispute Resolution Arbitration and Mediation Center

7 7 WIPO Arbitration and Mediation Options Arbitration and Mediation Center

8 8 Recommended WIPO Mediation Clause Any dispute (…) shall be submitted to mediation in accordance with WIPO Mediation Rules. The place of mediation shall be […]. The language to be used in the mediation shall be […]. Arbitration and Mediation Center Recommended WIPO Arbitration Clause Any dispute, (…) shall be referred to and finally determined by arbitration in accordance with the WIPO Arbitration Rules. The arbitral tribunal shall consist of [three arbitrators][a sole arbitrator]. The place of arbitration shall be […]. The language to be used in the arbitral proceedings shall be […]. The dispute, controversy or claim shall be decided in accordance with the law of […].

9 9 Arbitration and Mediation Center

10 10 Mediation Process Arbitration and Mediation Center Commencement Appointment of Mediator Initial Conference Meetings Conclusion Request for Mediation (Art 3-5); Fees Art 21) Role of the mediator (Art 13); Appointment (Art 6-7) Conduct of the mediation (Art 9-12) Set up the first meeting; Agree on preliminary exchange of document, if any Agree on ground rules of the process; Gather information and identify issues; Explore the interests of the parties; Develop options for settlement; Evaluate options 80% success; costs USD 6,000-60,000; duration 1-7months

11 11 WIPO Mediation Example 1 Patent infringement dispute –R&D company holding patents disclosed patented invention to manufacturer during consulting contract –No transfer or license of patent rights –Manufacturer started selling products which R&D company alleged included patented invention –Negotiation patent license failed –Parallel infringement proceedings in several jurisdictions? Parties submitted to WIPO Mediation –Agreed license and new consulting contracts Arbitration and Mediation Center

12 12 WIPO Mediation Example 2 US software provider licensed software applications to European telecom provider: –10 named users –WIPO Mediation followed by WIPO Expedited Arbitration –Place mediation: Paris; Applicable law: English Request for Mediation: –Alleged breach of license: more than 50 users –Outstanding fees: USD 10 million –European telecom asked to provide list of unauthorized users –No settlement, but issues narrowed down –Total duration: 2 months, mediators fees: USD 13,000 Arbitration and Mediation Center

13 13 Arbitration and Mediation Center Party autonomy Flexibility Efficiency Rules on technical evidence Confidentiality provisions Two exchange of pleadings – Request & Answer – Statement of Claim & Defense WIPO Arbitration

14 14 WIPO Arbitration Example 1 [patent] Exclusive R&D and licensing agreement biotech co. and pharma co. Alleged delays development and regulatory approval biotech compound R&D entity terminated agreement started WIPO arbitration proceedings Arbitrator expert in biotech-pharmaceutical Two-day hearing Settlement agreement Arbitration and Mediation Center

15 15 WIPO Arbitration Example 2 [trademark] US university registers TM for email system in US, Canada, etc. CN IT manufacturer registers TM for computer products in 16 countries Opposition proceedings & litigation for 6 years TM coexistence agreement; WIPO arbitration clause US universitys TM application in CN refused, requests CN manufacturers collaboration Request for specific performance (proxy registration & license); sole arbitrator Interim award (specific performance) Arbitration and Mediation Center

16 16 Arbitration and Mediation Center WIPO Arbitration WIPO Expedited Arbitration One exchange of pleadings ; Shorter time limits; Sole arbitrator; Shorter hearings; Fixed arbitrators fees

17 17 WIPO Expedited Arbitration Example 1 Insurance –Both parties see urgency and agree on short deadlines –Only one issue in dispute –One-day hearing –Final Award: 5 weeks Arbitration and Mediation Center

18 18 WIPO Expedited Arbitration Example 2 Exclusive Patent License –Dispute involving 1 European and 5 US patents –US party rejected Asian party (inventor)s claim that its products embodies technologies covered by licensed patents and refused to pay royalties –Complex legal and technical issues (infringement, validity, enforceability, contract defense) –Business secrets, models, site visits (protective orders) –12 procedural orders, 2 preliminary awards –eight-day hearing –Final Award: 15 months Arbitration and Mediation Center

19 19 Drafting Arbitration Clauses (1) Essential elements: –applicable rules, governing law –number of arbitrators –place of arbitration: arbitration-friendly environment; modern arbitration act –language Use model clauses and modify only as necessary Combine options, including mediation –High settlement rate If arbitration, make it fit (e.g. expedited) Arbitration and Mediation Center

20 20 Drafting Arbitration Clauses (2) Examples of defective arbitration clauses –Arbitration in Geneva –Any disputes shall be solved by arbitration between the parties; failing that, arbitration in the English language shall be conducted in Houston, according to the Paris Convention, which shall be final and binding upon the parties. Examples of creative arbitration clauses –Disputes relating to patent infringement shall be finally determined in accordance with the WIPO Expedited Arbitration. Contractual disputes [different institution]. –Disputes relating to US patents: US arbitrator. Disputes relating to European patents: EU arbitrator. Each award can be challenged by and finally determined by arbitration in accordance with WIPO Arbitration Rules. The tribunal shall consist of three arbitrators. Arbitration and Mediation Center

21 21 Mediation followed by Arbitration Try mediation before arbitration, at least until –lapse of time period –termination Combining the benefits –arbitration well-prepared Arbitration and Mediation Center

22 22 Expert Determination Accommodate expeditious resolution of disputes between parties, concerning an issue of limited scope (e.g. royalty rate dispute) or clarification of certain technical or scientific issues by a neutral third party More informal, flexible and expeditious than arbitration Determination binding (unless parties agree otherwise) May be combined with other WIPO procedures Arbitration and Mediation Center

23 23 WIPO Arbitration and Mediation Case Experience (1) 45 mediations 49 arbitrations Parties from 16 countries (domestic & international) –France, China, Finland, Germany, Ireland, Israel, Italy, Japan, the Netherlands, Panama, Romania, Switzerland, USA, etc. Place of Arbitration –France, Germany, the Netherlands, Switzerland, USA Procedures –English, French, German Arbitration and Mediation Center

24 24 WIPO Arbitration and Mediation Case Experience (2) Subject matter: –Contractual: Patent licenses, pharmaceutical distribution agreements, R&D, joint ventures, software/IT, copyright collecting societies, trademark coexistence agreements, art marketing, other commercial relationships (construction, finance, employment). –Patent infringement High success rate –Value in dispute: USD 20,000 - 600 million Arbitration and Mediation Center

25 25 WIPO Arbitration and Mediation Cases Arbitration and Mediation Center

26 26 Arbitration and Mediation Center

27 27 Role of the WIPO Center as an Administering Authority (1) Administered vs. Ad Hoc? –Hard to agree on procedure once dispute arisen; do you know suitable neutrals; which administering institution (do not combine) Rules with IPR orientation –Mediation, (Expedited) Arbitration, Expert Determination –e.g. WIPO Arb Rules Arts 48-52: special rules on experiments, site visits, agreed primers and models, trade secrets and confidential information, protective orders, confidentiality advisor Model contract clauses List of neutrals (arbitrators, mediators, experts) Arbitration and Mediation Center

28 28 Role of the WIPO Center as an Administering Authority (2) Competitive fees Efficient and cost-effective case administration –Establishment of the Tribunal, challenges, support in appointment of experts, management of fees and costs Hearing facilities –Free of charge in Geneva and Singapore WIPO Electronic Case Facility (ECAF) International, institutional knowledge, guidance, supervision Design and operation of procedures for special categories of IP disputes (UDRP) Arbitration and Mediation Center

29 29 Arbitration and Mediation Center WIPO Neutrals Over 1,000 experts 70 nationalities Broad range of ADR, IP, and technical backgrounds Appointment in WIPO Cases Referral Service

30 30 WIPO Schedule of Fees (Arbitration) : Competitive Rates Arbitration and Mediation Center

31 31 WIPO Electronic Case Facility (ECAF) Available for arb / med cases under WIPO Rules –Certain exceptions: Americas Cup Jury Procedure Main features –Web-based electronic docket –Facilitation of party / neutral case management –Easy, Instant, Location-independent, Secure User Information – Arbitration and Mediation Center

32 32 ECAF: Log-In Arbitration and Mediation Center

33 33 WIPO ECAF Docket Docket allows submission in most common formats (Word, PDF, JPG, etc.) All actors may view and search the Docket (by submitting actor, date, subject title) Email alerts communicated to all actors when new submission made Arbitration and Mediation Center

34 34 WIPO ECAF Case Management è Case Overview Contact Information Time Tracking Finance Overview Message Board Arbitration and Mediation Center

35 35 WIPO ECAF Case Management Case Overview Contact Information è Time Tracking Finance Overview Message Board Contact Arbitration and Mediation Center

36 36 WIPO ECAF Security WIPO ECAF Use Example Authentication –ECAF username –ECAF password –RSA SecurID password –Changing passcode generated by RSA SecurID (Valid only for 60 seconds) Encryption –Modern SSL (Secure Socket Layer) system Firewall protection Arbitration and Mediation Center 1 US Claimant; Respondents in 3 (US and Europe) locations Claimant represented by 2 NY firms, 1 German firm; Respondents represented by 2 German firms.

37 37 Domain Name System v. Intellectual Property System Domain name system –largely privately administered –result in global presence –first come, first serve Intellectual property system –publicly administered –territorial rights –examination Arbitration and Mediation Center

38 38 WIPO First Domain Name Process Commenced in July 1998 w/ endorsement by WIPO member states Final report published in April 1999 Main Recommendations –Best Practices for Registration Authorities –Administrative Procedure Concerning Abusive Domain Name Registrations –Exclusions for Famous and Well-Known Marks –New gTLDs Arbitration and Mediation Center

39 39 Uniform Domain Name Dispute Resolution Policy (UDRP) Approved by ICANN in October 1999 Administrative procedure Limited to abusive registrations Mandatory submission by domain name registrants Remedies –Transfer or Cancellation only –No monetary damages Arbitration and Mediation Center

40 40 Applicability of UDRP Applicable to all gTLDs (.biz,.com,.info,.net,.org) Applicable to certain ccTLDs (.ch,.co,.ec,.fr,.na,.ph,.ve, etc.) Arbitration and Mediation Center ICANN Registrar Accreditation Agreement Registrar DN Registration Agreement Domain Name Registrant

41 41 UDRP Criteria Conditions for obtaining remedies: 1. Domain name must be identical or confusingly similar to trademark; and 2. Registrant has no rights or legitimate interests in domain name; and 3. Domain name is registered and used in bad faith. Examples of rights or legitimate interests: –Registrant commonly known by the domain name –Use for bona fide offering of goods or services Examples of bad faith: –registration for purpose of profit sale to trademark owner –pattern of preventing trademark owners from registration Arbitration and Mediation Center

42 42 Arbitration and Mediation Center Sampling of Disputed Domain Names, fortuné,,, greetings-,,,,,,,,, play-,, www-,,,,,,,,,,,,,,,,,

43 43 Why the UDRP? Global Directly enforceable decisions Non-profit fees (USD 1,500 for 1-5 domain names) Fast – within 2 months Transparent – decisions publicly available Arbitration and Mediation Center

44 44 WIPO Domain Name Dispute Resolution Arbitration and Mediation Center

45 45 Role of the WIPO Center as a Resource Center IP ADR guidance Publications Workshops, conferences (upcoming events) –WIPO Workshop for Mediators in Intellectual Property Disputes, June 15-16, 2006 –WIPO Advanced Workshop for Mediators in Intellectual Property Disputes, June 19-20, 2006 –WIPO Arbitration Workshop, October 17-18, 2006 –WIPO Advanced Workshop on Domain Name Dispute Resolution, October 19-20, 2006 Arbitration and Mediation Center

46 46 Information Mailing list: Arbitration and Mediation Center

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